Should brand owners and manufacturers be able to register shapes like this as trademarks?

The Court of Justice of the European Union is expected to release its ruling tomorrow on whether a Lego brick can be registered as a trademark in Europe. The ruling will come nearly eight months after Advocate General Mengozzi opined that registration of the brick was not permissible (and tried to use one of Sony’s trademarks descriptively).

(ii) the shape of goods which is necessary to obtain a technical result; or

…

I reviewed the AG’s opinion for World Trademark Review. A copy of the article can be found in .pdf format here. Another version of the article, published on the Ashurst website, can be found here.

It will be interested to see the extent to which the Court adopts AG Mengozzi’s reasoning, and what they have to say about the (admittedly unclear) three step test that he put forward.

It will also be interesting to see what comments (if any) the Court make over AG Mengozzi’s generic use of one of Sony’s trademarks. At para 73, he refers to “memory sticks”, and later in the same paragraph refers back to “those USB keys”. He even inserts a footnote (number 49) to say that “memory sticks” are also known as “USB keys” or “pen drives”. This is a particularly interesting set of statements for an AG delivering a trademark opinion to make, since “MEMORY STICK” is actually a trademark of Sony Corporation (and it’s a European registration, no less, with number 004021598), and because Sony’s memory sticks don’t use USB technology either. In fact, USB keys and MEMORY STICKS don’t even look the same. I wonder what Sony made of that comment.

This was (almost) the title of the first article I ever had published externally, back in March 2007 when I had been in the IP Litigation department of my firm for about 8 months.

I’m pleased to say my own style has developed since those early days, but when you’re starting out it’s worth bearing in mind not just what you are going to say but also where you are going to say it: you may have a choice about where your creative endeavors are published. Having submitted articles and notes to a few different publishers, experience has shown me that the main difficulty with external articles, as opposed to those published within the Business Development and Knowledge Management functions of your law firm, is choosing the editor to whom you will cede final control of your work.

Clearly, you should do what you can to avoid any publisher who is unlikely to be familiar with the intricacies of the facts of a case, or to appreciate the subtleties of the ratio decidendi (a particular problem when the word limit doesn’t permit extensive analysis of the factors leading to a particular conclusion nor treatment of what the author is not saying). Consider too that an editor will likely feel at liberty to make minor changes without consulting the author (rightly), such as in layout and the style of language used, but if a look through past articles demonstrates lots of examples of jarring sentences, or paragraphs not flowing and joining ideas particularly well, then don’t just assume it’s always an author’s fault. The piece might actually have become disjointed, as if it was the product of two minds, because an editor has made too many changes or has been too quick to make them.

Be aware too that publishers might run articles through “Find and Replace All” without checking them too closely afterwards. Sometimes consistency or house-style will require changes to be made to certain spellings, but where a particular alternative is used as a proper noun (e.g. the UK’s “Trade Marks Act”), then you may prefer it to be left as is, even if it is acceptable for other instances of the alternative spelling to be amended (e.g. “trade marks” becoming “trademarks”) for the sake of the wider audience. Take control of it: if something is important the way it is, tell the publisher.

All of this is important, of course, because your name will be attached to your work. You will want to write not just because you enjoy your work (hopefully that will be the case) but also to show others that you know what you’re talking about and that your knowledge is right up-to-date. The last thing you want is for people to read your work and think less of you.

By the way, my article (which can be found here) discusses issues of similarity of marks and goods/services in a dispute relating to the branding of fruit juices. It also offers some clarification on what is meant by a trademark owner’s “acquiescence” in a third party’s use of a mark.